While I understand the need for the proposed rule
changes

While I understand the need for the proposed rule changes to
make the PTO more efficient, I am concerned about the mounting
fees for each activity and the shifting of responsibilities
from the examiner to the practitioner. As the fees increase and
the obligation on the practitioner increases (also increasing
the costs to the applicant in the form of higher attorney
fees), the ability to apply for patents is being removed from
all but the wealthiest of clients. It is now approaching the
point that only corporations with large patent budgets can
afford to undertake this method of protection for invention.
This is not the intent that Congress had for enacting the
patent statutes.

Specific comments to each of the rule changes as
follows:

1. Topic 1 appears to be fine and may actually be of benefit
to small entities. Has no impact on Union Camp.

2. Topic 2 would require a separate surcharge for the
delayed submission of a declaration and a separate surcharge
for delayed payment of filing fee. The trade off is that the
PTO will not charge for re-issuing the filing receipt. No
objection per se. Since we instruct our outside counsel to pay
the filing fee, the fee won't change for those cases in which
we do not have the declaration signed at the time of filing the
application.

3. Topic 3 would allow for the delayed submission of the
declaration (with an additional fee), but the burden is on the
attorney to submit a certification as to the names of
inventors, priority, investigation of inventorship, and that
he/she believes the inventorship is correct based on the
investigation. Again, no real impact on Union Camp, but will
increase our costs in those cases where we can't get the
declaration signed right away. However, as noted in the
discussion, a delay in signing the declaration will often
result in delay in signing the assignment, and the right to
prosecute the application flows from the assignment.

4. Topic 4 would limit the total number of claims to 40,
with six independent claims. This would include multiple
dependent claims, which will be counted based on the number of
claims to which they depend. This limitation in itself is OK
since we try to keep the number to a minimum so as to not have
to rewrite the case for foreign filing. The rule change seems
to be a bit of overkill since you currently have to pay for
excess claims now, and most large cases would get a restriction
requirement anyway. Seems to be directed to a very limited
number of cases that have burdened the system. However, what is
of concern is the discussion in the second column on page 665
in which the PTO would limit the number of species embraced
within a Markush claim, or the number of sequence listings
within a claim, as well as a limit on the number of alternate
limitations included in a claim to be counted as one claim.
With some large chemcial groups, limiting the number of species
and/or sequences would limit the coverage and necessitate the
filing of additional cases (hence more fees) the way they have
structured the rule. Again increasing fees that will mean only
wealthy clients can file.

5. Topic 5 brings the PTO drawing rules in line with those
for the PCT. This is acceptable because it would actually
simplify the work for the practitioner. However, my
understanding of the PCT rules essentially require formal
drawings at the outset of the case. Hence, the applicant would
have to prepare and pay for formal drawings before he/she/it
knows whether there is patentable subject matter.

6. Topic 6 is acceptable, because in some cases printing
patents in color would enhance the ability to discern the
patentable features of an invention, i.e. color may be an
element of the novelty.

7. Topic 7 on its face is acceptable. It is not acceptable
to require formal drawings as part of a response to an office
action indicating allowable subject matter. In many cases the
notice of allowable subject matter is only to the narrowest of
the claims. Thus, you could get an office action that indicates
only one claim is alllowable, and then have to undertake the
expense of formal drawings. Thus, the drawings may have to be
prepared before you know whether the entire case, or even the
commercially desireable embodiment, is allowed.

8. Topic 8 is a very acceptable alternative to paper
filings. The sequence listings and program listings are often
voluminous. The only concern I would have is how to obtain
copies of any electronically submitted listings. The proposed
rule states that the PTO would establish an appropriate system
for accepting and using such submissions, but is silent as to
how an electronic submission would be dealt with when the
patent issues or the application publishes (say as the priority
document for a PCT filing). I am assuming that the PTO would
establish some way that a practitioner could retrieve the
submission.

9. Topic 9 is objectionable in ALL aspects. Requiring the
certification and description will greatly increase the cost of
an application, provides a description that may be adverse in
the advent of litigation of the patent (prosecution history
estoppel), shifts the burden of examination from the examiner
to the practitioner, and possible undermines the validity of an
issued patent. Limiting the number of references runs the risk
that in crowded art fields that material references are not
considered. The rule substitutes the attorney's judgment for
that of the examiner. Moreover, the rule states that the
practitioner can pick the ten references to exclude from the
description requirement. Contrary to the stated belief in the
rule that the closest citations would be described in the
greatest detail, the 10 most material references will be
excluded because of the fear of litigation and prosecution
history estoppel. Moreover, practitioners will limit their
searches to 10 references, because, in the event of litigation,
they would not want to have a reference in their file that was
not cited.

The rule would also require the submission of all cited
applications. While a party can petition to expunge the
citation from the record, given the track record of the PTO in
handling petitions, it is likely that IDS citations to
confidential information could publish (and thus be made
available) before the petition is granted to expunge.

On the plus side, I do not think it is unacceptable for the
attorney/agent of record to have to certify that he/she has
reviewed the references submitted. Likewise, I do not view it
as unacceptable to require a specific citation to the material
page and/or section in a large reference.

The best way to change the system at present is to seek a
Legislative change. Only with a change in statute will
practitioners agree to submit fewer references without fear of
reprisal.

10. Topic 10 should be acceptable on its face. However, as a
practical matter, if Rule 9 is not imposed expressly, the
examiners will do so implicitly through this proposed rule and
will reject any IDS that does not comply with Topic 9
above.

11. Topic 11 is directed to the suspension of prosecution. I
do believe there should be a time limit for the suspension,
after which the application would be deemed abandoned. I do not
believe that the publication of the application would have a
chilling effect on others active in the field. On the contrary,
it may provoke action by others and/or may disclose information
needed to carry the science forward. There is a substantial
risk in publication, because it would provide information from
which another could copy/infringe without the benefit of patent
protection to pursue the offender.

12. Topic 12 requires a fee for preliminary amendments and
supplemental replies. Again, all this is doing is generating
more fees without any benefit to the applicant. A preferred
alternative would be to limit the time period and/or the number
of submissions permitted.

13. Topic 13 is acceptable, but it does increase the burden
on the attorney/agent to submit replacement paragraphs/claims
as well as marked-up copy for the examiner's review.

14. Topic 14 is acceptable, but it does place an increased
burden on the attorney/agent to insure that the first claim
encompasses the embodiment to be prosecuted first.

15. Topic 15 is acceptable, but given the PTO track record
in handling expedited petitions, seems like another instance of
a "petition to get lost". This provision would have limited
interest to Union Camp.

16. Topic 16 is unacceptable because it substitutes the
attorney's judment for that of the examiner. While it might be
acceptable to suggest areas for broadening, the requirement
imposed appears to shift the burden.

17. No comment as to Topic 17.

18. While I agree that some alternatives are needed to
reduce the number and time for appeals, the proposed rule in
Topic 18 will only be effective when the review is conducted by
person(s)having experience with the PTO examination procedures
and outside the chain of the normal examination, i.e. an SPE in
a related art area or a Quality Review person. On their face,
the proposed reviews are acceptable and might eliminate some of
the extreme cases. Moreover, since the reviewer does not have
the authority to overrule the primary examiner, the review
would be ineffective in the case of a obstinant examiner.

19. Topic 19 is acceptable.

20. I have no experience with the Disclosure Document
Progam, but it would seem that the use of a Provisional
Application has eliminated the need for this type of
program.

21. I see no need for a PTO review service for applicant
created forms. However, if such a review were to occur, it
seems more reasonable to charge one fee per form, regardless of
the number of submissions needed to get an approved form.